Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Tuesday, 31 January 2017

Pac-Man is an incredibly simple game which has more than stood the test of time both as a game and through its extensive merchandising. It is the sort of IP which many seek to emulate but few have followed successfully.

In 2016, the website US Gamer named Pac-Man the highest grossing arcade game of all time (its spin off game, Ms Pac-Man came in at number 4).

Anyone who has played the game will not be terribly surprised - it is a very addictive game.

Today Pac-Man and his ghostly nemesis are as
likely to be found in fashion stores as games
- the above all come from Anya Hindmarch

Mr Nakamura did not develop Pac-Man himself (that honour is reserved for Toru Iwatani) but he did make Pac-Man possible.

He established Nakamura Amusement Machine Manufacturing Company (better known as Namco) in 1956.

The company started as two mechanical horse rides on a department store rooftop but went on to become one of the leading pioneers in the video game industry. Pac-Man is one of the company's most famous creations but by no means their only game.

Fun fact: The shape of Pac-Man
was apparently inspired by a pizza with a slice missing.

Pac-Man's popularity was fuelled by the fact that its non-violent maze/puzzle structure was at odds with most other Street Fighter style arcade games of the time and, significantly, this led to it having broad appeal with both male and female gamers.

Pac-Man has become something of a cult figure both within and outside the computer gaming world. Mr Nakamura, as Pac-Man's "father" was essential in making Pac-Man happen.

Mr Nakamura was an honorary advisor at Namco's successor business, Bandai Namco until his death at the age of 91 on 22 January 2017.

Monday, 30 January 2017

The first issue of theJournal of Intellectual Property Law and Practice (JIPLP) of 2017 is available. This edition includes articles covering the German doctrine of free use, registrability of trademarks in Italy, online copyright infringement and copyrightability of choreographic works in India, and an editorial by IPKat’s Neil Wilkof.

Happy Monday!

The Office of the Chief Economist at the US Patent and Trademark Office announced the latest improvements to the PatentsView platform. The partnership with the American Institutes for Research and web design experts at Periscopic has led to new visualization tools. In addition, it is possible to download portions of the database and search for government-funded patents.

The European Patent Office is looking for interns for the Praktika programme. It involves three weeks in Directorate-General 1 at the EPO in The Hague. Interns will work with examiners on actual case files and run prior art searches. Deadline is 31 January 2017. More details, here.

"Brand Academy 2017 – Post-Brexit: The future for IP?", organized by the Law Firm Lewis Silkin, will take place on 9 February 2017 at The King’s Fund in London. IP barristers Martin Howe QC and Simon Malynicz QC will discuss the new landscape for the UK. Free attendance, but registration required.The 6th International AMPPI Conference will take place from 1 to 3 March 2017 in Mexico City. The event is organized by the Mexican Association for the Protection of Intellectual Property, the national group of the AIPPI. International and national speakers will discuss trendy topics such as intermediaries on the Internet, trade secrets, Internet of Things (IoT) from legal and technological perspectives, IP and millennials, and monetizing copyright on social media. The standard fee is 400 USD and discounts are available. Register soon here. For more information, send an email to gerencia@amppi.org.mx The latest edition of the European Journal of Law and Technology (EJLT) is online. The content of this open access journal includes articles covering the IP challenges of co-creating 3D printing objects, the role of law in cognitive journalism, the LawCite Project in Australia, a study of using video review as a learning tool in England, a comparative study on cybercrime legislation in Nigeria and the UK as well as the role of intermediaries in the enforcement strategies for combating illicit content on the internet.The Institute for Information Law (IViR) has announced the 18th International Copyright Law and the 5th Privacy Law and Policy summer courses, which will take place from 3 to 7 July 2017 in Amsterdam. The standard fee is €2100 and discounts are available. The enrollment is limited to 25 participants, so register soon here (ICL) and here (PLP).

Sunday, 29 January 2017

This Kitten was delighted to attend the 11th edition of the Pan-European Intellectual Property Summit (already announced here), which took place on 1st and 2nd December at the World Customs Organization in Brussels. Here is her report.

The event was attended by around 360 IP professionals from 37 countries. In this edition, the speakers covered trendy topics such as 3D printing, Internet of Things, unconventional trademarks, cross-border portability of content, Digital Single Market strategy, consequences of Brexit on Designs and Trademarks in the EU, and online counterfeiting.

Since some of the sessions took place in parallel, this Kitten was forced to sometimes choose between them. As such, she would like to apologize to those speakers whom she could not cover in this post.

Conference “From Mass Production to Customization by the Masses (3D Printing)”

The session was chaired by Dr. Anette Gärtner (Reed Smith LLP). The speakers, Samuel Gebbett (Materialise), Mette M. Andersen (LEGO) and Rob Lucas (Shulmans LLP), provided insights about the IP law implications regarding the creation of a product by using 3D printing technologies.

From the point of view of a 3D printing Service Provider (3DpSP), Samuel Gebbett (Materialise) explained the main features of some 3D printing technologies (FDM -Fused Deposition Modeling- and SLS -Selective Laser Sintering-), their advantages over the subtractive manufacturing and applications, such as the 3D printing midsole for adidas Futurecraft using SLS technology.

Samuel mentioned as challenges faced by a 3DpSP, the determination of IPR ownership and third-party infringement of IPRs. In addition, the “Katy Perry’s Left Shark” case (2015), which involved the takedown of a CAD file from Shapeways website due to alleged copyright infringement to the shark custom, was briefly discussed.

From the perspective of an IPR owner, Mette M. Andersen (LEGO) said the company has used 3D Printing technologies for about 20 years due to their advantages (cheap, fast and better quality) for prototyping, so, they do not consider such technologies as a threat. In addition, she highlighted one would be discouraged from mass manufacturing one of their most popular products (the standard brick) by using 3D printing technologies because it would take several hours and the quality would not be the same.

Mette also stated the official position of the company regarding 3D printing products similar or compatible with LEGO products. She said they welcome fair competition and actively monitor online activities to take action as necessary to prevent infringement of their IPRs. As well, they do not allow the use of the LEGO trademark on any 3D printed product.

Finally, from the point of view of an IP law firm practitioner, Rob Lucas (Shulmans LLP) discussed strategies for enforcing IPRs in the context of 3D printing technologies, such as the shutdown of websites and the removal of links containing infringing material. Rob also mentioned as challenges for effective enforcement of IPRs the degree to which CAD files can be shared can be quickly and easily shared, the complexity of starting cross-border proceedings and the difficulty to act against small- scale infringement occurring worldwide.

From the perspective of copyright and related rights owners, Chris Butler (Music Sales Group) pointed out that the music industry was materially affected in a negative manner at the beginning of the digital era. However, even though there are still economic losses due to infringements, more recently the industry has taken advantage of social media and has monetized the streaming of content.

Chris explained that licensing with key social media platforms, such as YouTube, has been one of the strategies to reduce the economic loss. In addition, some platforms, like Spotify, are playing an important role.

From the point of view of trademark owners, Caroline Perriard (BrandIT) mentioned that social media constitutes a great opportunity for building market visibility, but carries with it the disadvantage of not controlling brand messaging. She highlighted that understanding the role played by the social media and its users is a successful strategy against trademark infringement.

Caroline addressed a case where this role was not well-understood, leading to an unfavorable response by consumers to brand enforcement. In 2013, a cease and desist letter was sent to a blogger, (Sara Rosso) requesting that she refrain from the use of the Nutella trademark, logo or likeness on her Facebook page that had been created for the celebration of World Nutella Day. The company withdrew the letter one week later after the fans expressed their anger to its tone and content and Rosso had darkened her social media activities.

Most of us will likely make use of a famous short quote (let's call it a quip) at some point. We do so because such a quote (lying outside the purview of copyright protection--right Kats?) has transcended its
specific context and has become part of our broader verbal heritage. Presumably, use of such a quote, pregnant with widely- shared meaning, will improve the quality of our communication. Nevertheless, it is not infrequently the case that that the quote as used is not identical to what was originally said. The discrepancy between the original, versus popular, form of the expression, is seldom, if ever, due to malice, but rather reflects how utterances can be altered in the usual process of transmission and public adoption. Consider two notable examples, one regarding the well-known US author, Samuel Clemens, known by his pen name, Mark Twain, and the other regarding the iconic movie “Casablanca".

Twain’s famous utterance (in various forms) is -- “the reports of my death are greatly exaggerated”, “the reports of my death have been greatly exaggerated,” or “reports of my death are grossly exaggerated.” The admonition has come to express that some anticipated end may not be as certain as it appears. However, it appears that none of these variant forms is the precise utterance made by Twain.

In May 1897, Twain found himself in London, as part of a world-wide speaking tour intended to raise funds to help him cover substantial debts that he had accumulated due to several failed business ventures. A rumor began to circulate that Twain was seriously ill, and later came a report that he had passed away. As the story goes, an American newspaper reported that Twain had died. When this was brought to Twain’s attention in London, he was then reported to have quipped one of the variants above.

In fact, a reporter in London for the New York Journal had been asked by his editors in New York in late May 1897 to inquire about Twain’s health. Twain replied in writing,

“I can understand perfectly how the report of my illness got about, I have even heard on good authority that I was dead. James Ross Clemens, a cousin of mine, was seriously ill two or three weeks ago in London, but is well now. The report of my illness grew out of his illness.

The report of my death was an exaggeration (emphasis added).”

So here we have the precise form of the original quote. The source of the more familiar, albeit imprecise, form of the quote, seems to have come from a popular biography of Twain, written by Albert Bigelow Paine in 1912, two years after Twain’s death. In Paine’ version of Twain’s famous quip, Twain was approached in London by a young journalist, who was expected to write a 1000-word piece on Twain if had passed away (and only 500 words if he were still alive). In response to the journalist’s inquiry, Twain was reported to have remarked:

“You don’t need as much as that [1000 words]. Just say the report of my death has been grossly exaggerated.”

The upshot seems to be that while most scholars use the version set out in Twain’s own handwriting (see image on the left), the more popular version(s) rely on a version based on Paine’s book. The quote itself, however imprecise, has become a staple of (at least American) English, benefiting from its witticism and its attribution to Twain.

While the story of how Twain’s famous quote has been memorialized in a slightly imprecise fashion, the tale of the famous line from the move, "Casablanca" (according to some, the greatest movie ever made), is a bit more puzzling. Most Kat readers will probably recognize the line, “Play it again, Sam.” The problem is that line was never actually uttered in the movie. As summarized on Wikipedia:

“When Ilsa (played by Ingrid Bergman) first enters the Café Americain, she spots Sam (played by Dooley Wilson) and asks him to "Play it once, Sam, for old times' sake." After he feigns ignorance, she responds, "Play it, Sam. Play 'As Time Goes By'." Later that night, alone with Sam, Rick (played by Humphrey Bogart) says, "You played it for her, you can play it for me," and "If she can stand it, I can! Play it!"

Nowhere in this exchange was it ever said— “Play it again, Sam”.

Unlike Twain’s quote, there is nothing special in the contents of the utterance, “Play it (again) Sam”. Its enduring popularity seems to derive from the cinematic magic
of the scene as epitomizing the relationship between Bergman and Bogart, not to say the beauty of the song, "As Time Goes By", which will never go by. As such, it might seem that this line would be ripe for use as a powerfully suggestive trademark. [Merpel has done a quick check of the USPTO and she found several applications or registrations, none of which however are still valid. Go figure.]

Having regard to these two examples, it is notable how their cultural durability is not a function of their historical accuracy. An utterance is made and recalled, and it is then refashioned as it takes on popular currency of use. Scholars may take care to use the precise form of Twain’s quip, or correct Bergman’s never quite said famous line, but for the rest of us, it is irrelevant. By now, the more popular forms of use have acquired separate cultural meaning. And one final Kat comment—if any Kat readers have any further examples, please do share them.

Senior Kat Neil’s thought travels far far away back to the dawn of modern commercial trade mark use, trying to find an appreciation of how it came out. The inspirational questions he poses have received helpful feedbacks in the comment area, it seems that the picture is getting more and more clear. Would you also like to help out?

Ever-productive Kat Neil brings readers’ attention back to the history again, this time to the “Mazzei letter” affair which shows what can happen when the separation between the private and public was breached. As the Kohelet/Ecclesiastes once said, “there is nothing new under the sun” -- just like today’s public discourse, social media, wikileaks and false news.

The AmeriKat, this time as a messenger, brings a tender invitation – to conduct an evidence-based analysis of the impact of the EU’s pharmaceutical incentives, including the SPC and the “Bolar” exemption, on innovation and access to medicines.

Former Guest Kat Valentina Torelli, now associated with FJF Legal in Madrid, has graciously continued her coverage and commentary on EU developments in the area of privacy, this time in connection with the ePrivacy Regulation.

Mark Schweizer would like to bring the attention of the German Readers a recent decision (published 13 January 2017) of the Federal Court of Justice (Bundesgerichtshof, BGH) with far-reaching implications for practitioners. In essence, the BGH held that any prohibition to distribute a product entails an obligation to actively recall any products already on the shelves, endorsing the view expressed by the Oberlandesgericht Munich in 2013.

Last but not least, the weekly routines that bring round-ups for the latest IP happenings including events, book release and highlighted blog posts: Never too Late (x2) and Around the IP Blogs by InternKat Verónica Rodríguez Arguijo and Hayleigh Bosher.

Never Too Late 130[week ending on Sunday 8 January] | Around the IP Blogs | Sunday Surprises | Trademark and co-branding as a badge of … did you say "location"(?) | 15 fully-funded IP PhD positions are calling for candidates | Never Too Late: If you missed the IPKat last week! | Around the IP Blogs | Biosimilars battle in clearing the way - Fujifilm v AbbVie continues | Book review: Maintenance time and the industry development of patents

Never Too Late 129[week ending on Sunday 1 January] | Happy Public Domain Day! | Jaguar Land Rover DEFEND[ER]s its trade mark | Never Too Late: If you missed the IPKat last week! | Passing off the National Guild of Removers and Storers | Fuss over function: In case you missed the annual IP-World Christmas party | The Supreme People's Court of China's Michael Jordan Trademark Decision | Intermediary IP injunctions: what are the EU implications of the UK experience? | Länsförsäkringar, Länsförsäkringar, bork, bork, bork!| The champagne of trade mark disputes | Around the IP Blogs! | Swedish Supreme Court has ruled that sport broadcasts are not protected by copyright | Swedish Patent and Registration Office refuses registration of figurative mark because contrary to morality and public order

Never Too Late 128[week ending on Sunday 25 December] | Sunday Surprises | A TITANIC trade mark dispute | Book Review: two new methodology books for EQE candidates: Smart in C and Tactics for D | Around the IP Blogs | Before there was copyright there was censorship: the tale of "The Feast in the House of Levi” by Veronese | Permission to appeal in patent cases - farewell to the Pozzoli approach | EPO bows to EU Commission on patentability of products of essentially biological processes | Monday Miscellany | Groundless threats - Nvidia v Hardware Labs

Thursday, 26 January 2017

This Kat has a particular interest in all things related to the law of trademark licensing and always enjoys reading the most recent case law in this regard. Kat friend Taapsi Johri of K&S Partners, Gurgaon, India, has kindly shared this report of an Indian court decision that once again underscores how tricky the question of standing can be in this area.

The old law in India under the Trade and Merchandise Marks Act, 1958, defined “permitted use” as the use of a trademark by a person registered as a “registered user” under that Act. Use by a common-law licensee, therefore, was excluded from the definition since they were not subject to the Act. However, in 1996, while dismissing a claim of rectification of T.I. Raleigh’s registered trademark filed by its erstwhile common-law licensee, the Supreme Court of India in Cycle Corporation of India Ltd. v. T. I. Raleigh Industries [1996 AIR (SC) 3295], held that failure to register a licensee as “registered user” could not deprive a registered proprietor of his rights in the trademarks. This meant that use of a mark by a common-law licensee, such as by a “permitted user”, was recognized as having the same legal force as a “registered user”. This interpretation was later incorporated into the Trade Marks Act, 1999, which expanded the definition of “permitted use” to include use by both a “registered user” as well as a “permitted user” i.e. any person, other than a registered user, who is using the mark under a written consent from the registered proprietor (e.g., a common-law licensee). The Act of 1999, however, also introduced Section 53, which expressly prohibits a “permitted user” from instituting a suit for trademark infringement.

Section 53 came into play in an appeal filed recently before a Division Bench of the Delhi High Court, challenging the court’s jurisdiction to entertain a trademark infringement suit (P.K. Sen v. Exxon Mobile Corporation & another). The dispute arose when US-based Exxon Mobil Corporation (“EMC”) alleged infringement of its registered trademark EXXON by Kolkata- based Exon Engineering Corporation (“EEC”) and filed an action for such before the Delhi High Court. In the suit, EMC made its Delhi-based Indian subsidiary a co-plaintiff and claimed that its Indian subsidiary was using the mark EXXON in India under a license granted by EMC. It was further stated that all use of the mark EXXON made by the subsidiary would constitute use of the mark by EMC. As such, jurisdiction of the Delhi High Court was claimed under Section 134(2) of the Act, which permits a plaintiff to avail itself of the jurisdiction of a particular court, if it can demonstrate that at least one of the persons instituting the suit for infringement actually and voluntarily resides or carries on business within the territorial jurisdiction thereof.

EEC, on the other hand, challenged the jurisdiction of the Delhi High Court on the ground, inter alia, that being a common-law licensee, as opposed to a registered user, EMC’s Indian subsidiary had no right to institute a suit for infringement and hence, no jurisdiction can be conferred based on the subsidiary’s place of business. The aforesaid arguments made by EEC were rejected by the Single Judge of the Delhi High Court, which prompted EEC to file an appeal before the Division Bench.

Considering the factual background and the prevailing case law, the Division Bench overturned the Single Judge’s order and held that jurisdiction of a court in a suit for infringement cannot be claimed based on the place of business of a “permitted user” of the trademark in question. The Court noted that Section 53 explicitly bars a “permitted user”, such as a common-law licensee, from instituting a suit for infringement and therefore, the only persons entitled to bring a suit for infringement of a trademark would be the registered proprietor or the “registered user”. The Court further noted that, because EMC’s Indian subsidiary was not entitled to institute the suit and EMC itself has no direct business in Delhi, the suit cannot be filed under Section 134(2) of the Act claiming jurisdiction of the Delhi High Court.

While the aforesaid findings of the Division Bench are legally sound, they may cause logistical issues for companies based outside India and operating in India through their subsidiaries or licensees. On a positive note, however, this decision is expected to galvanize the recordal of “registered users” at the Trademark Registry, a beneficial practice that has taken a backseat over the years.

The GingerKat has been stalking this year's patent decisionsand has already come up trumps

It has been a quick start to the year with a number of juicy little decisions coming from the Patents Court and Court of Appeal. With the AmeriKat whisker deep in her own trial preparation, she has had to rely on one of her favorite courtroom teammates and IP legal eagle, Steven Baldwin (Allen & Overy), to summarize 2017's recent patent decisions. Take it away, Steve:

Teva, Accord, Lupin and Generics (t/a Mylan) commenced invalidity proceedings against one of Gilead’s SPCs. The SPC is for a composition containing tenofovir disoproxil with emtricitabine. Gilead’s combination product is TRUVADA® - an anti-retroviral used in treating HIV. As well as the TRUVADA® combination product, Gilead markets VIREAD®, a monotherapy (tenofovir), but has not obtained an SPC for it. As regards the combination product, Gilead’s EP (UK) ‘894 patent (the basic patent) contains no Examples of one of the two compounds in combination with any other therapeutic ingredient, and emtricitabine is not mentioned in it. However, claim 27 is to “a pharmaceutical composition comprising a compound according to any one of claims 1-25 together with a pharmaceutically acceptable carrier and optionally other therapeutic ingredients” (emphasis added). Gilead argued the product described in the SPC is protected by claim 27 of the EP (UK) ‘894 patent, but Teva disputed this and said that the SPC does not comply with Art 3(a) of the SPC Regulation. In Teva’s view, the case law is clear enough and no reference to the CJEU was needed and, in any event, emtricitabine is not “specified” in claim 27. Gilead in response argued that its SPC complies with the SPC Regulation as it is enough that its product falls within the scope of one of the basic patent’s claims using the “extent of protection” rules.

The Decision

Arnold J reviewed the CJEU’s SPC decisions post-Medeva in some detail. He decided that the infringement test for Art 3(a) had clearly been rejected but also came to the conclusion that “it is not sufficient for the product in question to fall within the scope of protection of the basic patent applying the Extent of Protection Rules. Something more is required” (para 43). He then spent a significant amount of the judgment considering what this “more” is, reasoning that there is little to no guidance in the CJEU cases in this regard. His conclusion was therefore that “the test to be applied in order to determine whether a product is “protected” by a basic patent within the meaning of Article 3(a) remains unclear” (para 91), which necessitated a referral to the CJEU. In referring the question on Art 3(a) as to what was required for a product to be protected by a basic patent, he stated that he was “encouraged by what the [CJEU] said in Actavis v Sanofi and Actavis v Boehringer to believe that there is a realistic prospect of the Court providing further and better guidance to that which it has hitherto provided” (para 91). Not content to leave matters to the CJEU, Arnold J expressed his own view of what “more” is required for a product to be protected within the meaning of Art 3(a):

“What more is required? In my view, the answer is that the product must infringe because it contains an active ingredient, or a combination of active ingredients, which embodies the inventive advance, (or technical contribution) of the basic patent. Where the product is a combination of active ingredients, the combination, as distinct from one of them, must embody the inventive advance of the basic patent”.

Arnold J then went on to suggest that in the present case, a product whose active ingredients are tenofovir disoproxil (TD) and another therapeutic agent (such as emtricitabine) “is not protected by the Patent within the meaning of Article 3(a) because the combination, as distinct from TD, does not embody the inventive advance of the Patent. This is not a question of the wording of the claims of the basic patent, which….can be manipulated by the patent attorney who drafts it, but of its substance” (see paras 97 and 98 in full).

This was an appeal of the UKIPO’s decision to refuse Abraxis an SPC for paclitaxel formulated as albumin-bound nanoparticles (nab-paclitaxel, marketed as ABRAXANE®) on the basis of Art 3(d) of the SPC Regulation, i.e., that:

"the authorisation referred to in point (b) is the first authorisation to place the product on the market as a medicinal product."

In relation to SPC Regulation Art 1(b), Abraxis argued that nab-paclitaxel is a single active ingredient (not a combination of an active ingredient with an excipient or adjuvant) and is a different active ingredient to paclitaxel because the binding to albumin has important therapeutic consequences. Abraxis therefore argued that nab-paclitaxel is a different “product” to paclitaxel under Art 1(b) and therefore the SPC application complies with Art 3(d) because the ABRAXANE® MA is the first authorisation to place nab-paclitaxel on the market. The UK IPO hearing officer had found that nab-paclitaxel was not a single active, but a combination of active and non-active ingredients. Arnold J held that it was clear for the purposes of SPC Regulation Art 1(b) that paclitaxel is the active and albumin is a carrier. There is no need to refer a question on art 1(b) to the CJEU because the law is clear from the CJEU decisions in MIT, GSK and Forsgren that Art 1(b) is to be interpreted narrowly (para 56). However, Arnold J did think it necessary to refer a question to the CJEU on the scope of Art 3(d) in this context.

The Decision

Arnold J held that the uncertainty in the law surrounding Arts 1(b) and 3(d) SPC Regulation arose from the decision in Neurim. He notes that the Neurim decision seems to be inconsistent with the CJEU’s decisions in MIT, GSK, Pharmaciaand Yissum. Whilst he could see how the decisions in MIT and GSK could still be consistent with Neurim (in that Art 3(d) could be interpreted more widely to encompass second medical uses, even if Art 1(b) was interpreted narrowly), he could not see how Neurim is consistent with Pharmacia or Yissum. This inconsistency was an issue since Abraxis were arguing, inter alia, that in light of the Neurim decision they should be able to obtain an SPC for a new formulation of a known active ingredient. Given the inconsistency between the CJEU case law, Arnold J has proposed asking the CJEU the following question:

“Is Art 3(d) of the SPC Regulation to be interpreted as permitting the grant of an SPC where the marketing authorisation referred to in Art 3(b) is the first authorisation within the scope of the basic patent to place the product on the market as a medicinal product and where the product is a new formulation of an old active ingredient?”

As in Teva v Gilead, Arnold J provided his own view on how the CJEU should answer the proposed question. He thinks the correct answer is “no”. Essentially, he considers that if Art 1(b) is narrowly interpreted, it would be inconsistent to construe Art 3(d) more broadly to allow SPCs for new formulations of known active ingredients.

He also said that construing Art 3(d) to allow SPCs for new formulations of known active ingredients would also cause uncertainty about exactly when an SPC for a new formulation could be obtained. Indeed, his view is that “...the SPC Regulation aims to balance the interests of patentees with those of other stakeholders. To achieve those objectives, it is necessary to have bright-line rules even if they sometimes deprive meritorious inventions of extended protection”. Further, his view is that whilst the Commission intended the SPC Regulation to cover second medical uses, such intention did not extend to new formulations of known actives. In support of this view he cited paras 11 and 12 of the European Commission’s Explanatory Memorandum proposing the first SPC Regulation in 1992, which appears to support his position. [Hmmm...the Merpe may have some more to say about this later with some references from the Explanatory Memos of her own to cite...]

The Appellant (Wobben) was the proprietor of EP (UK) 0 847 496, with a priority date of 1 September 1995, relates to a method of operating pitch-controlled wind turbines in high wind speeds. At that time, turbines were commonly shut down at wind speeds in excess of 25m/s. While the majority of turbines in commercial use at the priority date were fixed-speed turbines, the industry had become focused on "variable speed, variable pitch" (VSVP) turbines, in which both the torque and the pitch of the rotor could be varied depending on the wind speed. In the first instance proceedings before Mr Justice Birss, Wobben claimed that the defendants (collectively Siemens) had infringed the patent by installing wind turbines at a number of off-shore sites. Siemens disputed infringement and also contended that the patent was invalid for lack of novelty, obviousness and insufficiency. Birss J found the patent invalid for obviousness in light of an article published in 1982 by Dr Ervin Bossanyi (Bossanyi). He also held that, if the patent were valid, it would not have been infringed. Wobben attacked this finding on the basis that the judge wrongly directed himself as to the legal test for obviousness and made a series of fundamental errors in assessing the evidence of the expert witnesses. It also argued that the judge erred in assessing infringement and made findings which had no basis in the evidence.

The Decision

The Court of Appeal (Kitchin LJ giving the lead judgment) dismissed Wobben’s appeal. As regards inventive step the judge had appreciated that the teaching of Bossanyi related to fixed-speed rather than VSVP turbines, and he had been entitled to hold that the skilled person reading Bossanyi in 1995 would have considered implementing it on a VSVP turbine. Wobben argued that the skilled person thinking of applying Bossanyi's teaching to a VSVP turbine would have simply followed the common general knowledge approach of "feathering" the rotor to reduce the power extracted from the wind while maintaining the set rotor speed. However, Kitchin J rejected this argument, holding instead that the judge was “entitled to step back and consider, as he did, the wider picture”.

At the priority date turbines were shut down at a wind speed of 25 m/s to avoid the loads and fatigue associated with running the turbine in higher wind speeds. Bossanyi proposed that a turbine should be kept running above the wind speed at which a turbine would normally be shut down. Concern about the static and dynamic loads and the fatigue experienced by the turbine would therefore be of great importance to the skilled person thinking of implementing Bossanyi’s teaching and so he would naturally consider how these problems could be mitigated. There could be no criticism of Birss J’s conclusion in this regard since it had a proper basis in the expert evidence and the common general knowledge at the priority date. Further, while the teaching of Bossanyi concerned fixed-speed turbines, the most relevant aspect of its teaching was concerned not with the nature of the turbine but with its operation at wind speeds above the normal shut-down speed. By the time of the priority date, the industry was focused on VSVP turbines, and the two critical questions were whether the skilled person would see anything in Bossanyi worth implementing and, if so, how that would be done. The judge could not be criticised for the way he had answered those questions (see, in particular paras 61-64, 70, 74-77, 82-83 of judgment).

Kitchin LJ also held that Birss J was correct in his approach to infringement, finding that he came to the correct conclusion."

Like AIPPI's final talk of 2016, the AmeriKat is alsobristling - but instead of patent law issues, she is bristling having spotted someone wearing socks with sandals

Right before the Christmas holidays, the UK Group of AIPPI held the annual session devoted to reviewing the year's patent cases. This year Andrew
Lykiardopoulos QC’s attempted the Herculean feat, summarizing a year’s worth of patent
cases in a 90 minute presentation (and a helpful 60 page handout). For those that were busy braving the dark London streets for last minute present buying instead, the ever succinct Steven Willis (Bristows) reports on the evening's festivities:

"Andrew recapped that in 2016, there were 18 Patents Court judgments on issues of validity and/or
infringement. Of those, two concerned
issues of infringement only (both resulting in a finding of
non-infringement). Of the remaining 16,
only four resulted in a patent that was valid and infringed.

Andrew considered that Regeneron v
Kymab [2016] EWHC 87 (Pat) represented the most technically difficult
decision of the year, although he noted that Electromagnetic Geoservices v PGS would have run it pretty close
had the case not settled.

Andrew considered that the cases
before the English Courts in 2016 indicate that the UK is still considered one
of the foremost jurisdictions in which to begin “clearing the way”; the English
Courts are thorough and fast and an English Court judgment invalidating a
patent may be a good way to avoid a German injunction.

In terms of the speed with which
patent cases can be resolved in the English Courts, Andrew highlighted Napp v Dr Reddy’s, where (despite the
Court requiring expert evidence and statisticians to resolve the question of
infringement) final judgment that the patent was not infringed was made within
6 months according to the following timetable:

In Celltrion
v Biogen [2016] EWHC 188 (Pat), Carr J made clear that parties should be
thinking about trial dates from the beginning of litigation and should, in
accordance with the Practice Statement, be seeking to list the trial within
12 months of the claim form being issued.
Carr J highlighted the motivation for the Practice Statement as being
the need to speed up to avoid “falling
behind certain other jurisdictions”.

A
Choice of Starters

Novelty – Standard of Proof

Can something probable be inevitable? This was Andrew’s characterisation of the
riddle faced by Birss J in Actavis v
Eli Lilly [2016] EWHC 1955 (Pat).
The Judge was forced to grapple with the apparent tension between, on
the one hand, the requirement that for a feature of a claim to be anticipated
it must be the inevitable result of carrying out the prior art teaching and,
on the other, the standard of proof being the balance of probabilities. Birss J agreed with Floyd J in Actavis v
Janssen [2008] EWHC 1422 (Pat) that the presence of another fairly remote
possibility did not preclude a finding of “inevitable result”. As such, the fact that it was “highly
likely” that following the prior art teaching would result in a product with
the claimed property was sufficient for the claim to be anticipated.

De minimis and Quia Timet
injunctions

Napp
v Dr Reddy’s [2016] EWHC 1517 (Pat) provides a useful summary of the law
relating to the application of the de
minimis principle and of the interplay between de minimis and quia timet
injunctions. Arnold J’s consideration
of the authorities (which included calculating that “trace amounts” of 5000
tonnes of soya bean meal in Monsanto v
Cargill [2007] EWHC 2257 (Pat) equated to 250 tonnes of product carrying
potentially infringing DNA) led him to reject the Claimant’s “a little can
add up to a lot” argument. In this
case, the skilled person would not consider 0.01% of total production to
amount to an infringement, even if this amounted to 200 patches (randomly
distributed in a total of 2 million).

Andrew also drew attention to Arnold J’s treatment of the Defendant’s
argument that, for the purposes of obtaining a quia timet injunction, the Claimant needs to show a threat to infringe
on a scale which would give rise to a sufficiently strong probability of harm
to the patentee. Although Arnold J confessed
to being “initially attracted” by the submission, he ultimately held that it
confused two concepts: “One is whether
there is a sufficiently strong threat to justify the commencement of
proceedings. The other is whether the
acts threatened will fall within the claim sufficiently often to amount to an
infringement”. Accordingly, “if there is a clear threat to do acts
which fall within the claim sufficiently often that they cannot cannot be
discounted as de minimis, then in my judgment that is sufficient to justify
the bringing of proceedings on a quia timet basis.”

Finally, Andrew referred to Arnold J’s obiter statement that even where the Claimant gets over the de minimis hurdle, it may still be “disproportionate and a barrier to trade”
to award an injunction. Andrew drew
parallels with the availability of an injunction (or lack thereof) in cases
involving second medical use patents (where the generic is entitled to sell
for one or more non-patented indications) and cases involving Standard
Essential Patents which are subject to a FRAND obligation, i.e. other categories
of case where much of what the alleged infringer is doing is lawful.

Post-trial Amendment

Andrew considered that Warner-Lambert
[2016] EWCA Civ 1006 indicated that not much has changed since Nikken v Pioneer
[2005] EWCA Civ 906 in relation to the potential to amend a patent
post-trial. Andrew suggested in
particular that “re-writing amendments” should be proposed before trial (or
in certain circumstances at the commencement of trial). Andrew did not consider Arnold J’s
rejection of Warner-Lambert’s attempt to amend its patent post-trial (and finding
that such amendment would amount to an abuse of process) ([2015] EWHC
3370 (Pat)) or Floyd LJ’s upholding of the decision ([2016] EWCA Civ
1006) to be controversial. Andrew
considered that the days of proffering a raft of last minute amendments are
over both in the UK and at the EPO.

The
Soup

Obviousness over the CGK Alone

Andrew highlighted two judgments from Birss J which suggest that he
does not particularly warm to a pleading of obviousness over CGK alone. Firstly, in Accord v
Medac [2016] EWHC 24 (Pat), Birss J emphasised that relying on
combinations of features that are said to be CGK “can pose a particularly acute hindsight problem” and furthermore
indicates that the combination is “one
which the person attacking validity has not been able to find as a
pre-existing combination in the concrete prior art”. Birss J rejected an argument that the
invention was obvious over CGK in Unwired
Planet v Huawei [2016] EWHC 576 (Pat) in similar terms: “the argument presented a combination of
common general knowledge features which had been created with hindsight
knowledge of the patent.”

However, in Hospira v
Cubist [2016] EWHC 1285 (Pat), Carr J suggested that he would have found
Claim 1, which included the use of a standard buffer, a standard agent and a
standard purification process, obvious over the CGK alone had he not already
found it obvious over a piece of prior art.

Daniel Alexander QC’s judgment in Meter-Tech
v British Gas [2016] EWHC 2278 (Pat) reiterates that, where a party
alleges obviousness over CGK alone, it must clearly set out what it alleges
the CGK to be in its statement of case.
Furthermore, Daniel Alexander QC held that the party must set out how
the CGK differs from the invention and why the CGK renders the invention
obvious. However, Daniel Alexander QC
also emphasised that the court “should
be careful not to place undue forensic weight on the precise way in which
such a pleading is done” suggesting that there may be a certain amount of
scope to adopt a “wait and see” approach.

Researching the answer

In KCI v Smith
& Nephew [2010] EWHC 1487 (Pat), Arnold J held that information that
would be acquired by the skilled person as a matter of routine can, in
addition to CGK, be taken into account in considering inventive step. In Richter Gedeon v
Generics [2016] EWCA Civ 410, Sir Robin Jacob upheld Sales J’s finding
that such routine steps might include asking the author of a piece of prior
art for clarification: “I cannot see a logical distinction between
a case where it is obvious to look something up and one where it is obvious
to ask and clear that the answer would be given and would be clear.” However, as Andrew pointed out, Sir Robin
was careful to highlight the unusual facts of this case. As such, it may be that the finding is
confined to its facts rather than being a principle of broader application.

In GSK
v Wyeth [2016] EWHC 1045 (Ch), Carr J agreed with Sales J’s attempt to
“modernise” the concept of CGK in Teva v
Astrazeneca [2014] EWHC 2873 (Pat) in view of the “procedure for the dissemination of scientific knowledge in the age of
the internet”. Carr J thus held
that the CGK should be taken to include “material
which the skilled addressee knows to be available on-line and which is
generally accepted as a good basis for further action”

Obvious to try

Carr J’s judgment in Actavis v
Lilly [2016] EWHC 1955 (Pat) clarifies the test that is to be applied
where an invention is said to be obvious to try. In St Gobain v
Fusion Provida [2005] EWCA Civ 177, Jacob LJ set the barrier at: “more or less self evident that what is
being tested ought to work”. The
House of Lords in Conor
v Angiotech [2008] UKHL 49 held that the test was whether there was a “fair expectation of success” with the
degree of expectation required dependent on the facts of the case. As Conor
did not include reference to the test elucidated by Sir Robin in St Gobain, Carr J felt able to find that “on the facts of this case I do not believe
that the St Gobain way of putting
the question is the appropriate one”.
Andrew suggested therefore that St
Gobain can be considered confined to its facts and that the “more or less self evident” phrase has
been put to bed.

The
Main Course

Construction and Infringement
of Swiss Type Claims

Andrew reminded the audience of Arnold J and Floyd LJ’s 2015 judgments
concerning the construction of Swiss-type second medical use claims. In refusing Warner-Lambert’s application
for an interim injunction in January 2015 ([2015]
EWHC 72 (Pat)), Arnold J held that there was a requirement that the manufacturer
subjectively intended (at the point of manufacture) that his medicament be
used in the treatment of the patented indication. As there was no such intention, there was
no arguable case of infringement. On
appeal, Floyd LJ disagreed with Arnold J’s approach and suggested that the
test should be one of objective foreseeability ([2015] EWCA Civ
556). However, as Floyd LJ chose
not to disturb Arnold J’s finding that the balance of convenience lay with
the Defendants, the interim injunction was refused and his statements on construction
remained obiter. In his judgment on the merits of the action
([2015]
EWHC 2548 (Pat)), Arnold J expressed serious reservations with Floyd LJ’s
approach but resolved to attempt to apply it, nevertheless finding that the
patent was not infringed (having also held the patent invalid).

The parties appealed in relation to both validity and
infringement. In October 2016 ([2016] EWCA Civ
1006), Floyd LJ upheld Arnold J’s findings concerning the validity of the
patent. Noting Arnold J’s “profound
reservations” with the correctness of the approach he had previously proposed,
Floyd LJ nevertheless sought to provide some clarification on the
construction of Swiss-type claims holding that “it is only essential that the manufacturer is able to foresee that
there will be intentional use for the new medical indication”. However, Floyd LJ suggested that it should
be possible to “negative” that intention “where
the manufacturer has taken all reasonable steps within his power to prevent
the consequences occurring”.

Once again Floyd LJ’s statements are obiter, but Andrew noted that two obiter statements, drafted in strong terms are likely to carry
significant weight. Andrew further
noted that all is still to play for in relation to post-EPC 2000 claims.

Ranges

In Napp v Dr
Reddy’s [2016] EWHC 1517 (Pat), the Court considered the construction of
ranges for the first time since the Court of Appeal decision in Smith &
Nephew v ConvaTec [2015] EWCA Civ 607.
Andrew noted that the Court’s decision in that case, where 0.77 was
held to fall within a range of 1-25 raised a few eyebrows. In Napp,
Arnold J rejected the Claimant’s suggestion that a claim to a range of 10-15%
would be understood by the skilled person to have been expressed to the
nearest 5% and would therefore be understood to encompass a range of
7.5-17.5%: “there is nothing in the specification of the Patent which sheds any
light on the precision of this numerical limit. On its face, it appears to be expressed as
the nearest whole number.”

Some
Trimmings

Ambiguity leading to
insufficiency

Birss J’s judgment in Unwired
Planet v Huawei [2016] EWHC 576 (Pat) provides a useful summary of the
law of insufficiency, including a detailed consideration of insufficiency
resulting from ambiguity. Birss J
agreed with Arnold J in Generics v
Yeda [2012] EWHC 1848 (Pat) in that this branch of insufficiency requires
more than a “fuzzy boundary” at (as Andrew put it) the point that the claim
ends and un-monopolised life begins.
Birss J noted that in the cases in which a finding of insufficiency by
ambiguity has been found (Kirin Amgen [2004]
UKHL 46 and Sandvik
[2011] EWHC 3311 (Pat)), the determination of the scope of the claim
turned on carrying out a technical test to find out if a product or process
is within the claim or not. In such
cases “if the skilled person cannot
know whether they are carrying out the right test, then the claim is truly
ambiguous and therefore insufficient”.

Legal Priority

In Idenix
v Gilead [2016] EWCA Civ 1089, Kitchin LJ gave the provisional view, obiter, that the transfer of equitable
title in the priority year could be sufficient to render the transferee the
successor in title for the purposes of the Paris Convention, which is in line
with previous Patents Court jurisprudence on this point.

In Actavis v
Eli Lilly [2016] EWHC 1955 (Pat), Birss J considered the extent to which
a party relying on a novelty-only citation is required to prove that the
third party patentee was entitled to priority. He held that “the legal burden of proof lies on the party attacking validity…
However, if sufficient evidence is available to support an inference that
legal priority exists, an evidential burden will have shifted to the patentee
to call evidence to rebut that inference”. In this case, “the application taken at face value supports an inference that legal
priority exists”. However, the
situation may be different if, as was the case in Idenix, the novelty-only citation was an application belonging to
either side.

The
Gravy

Plausibility

On to the gravy of this year’s AIPPI Christmas feast – plausibility –
so-assigned because it has been “sloshed on everything” this year.

One of the key issues in the law of plausibility is the extent to
which experimental data is required in a patent in order to render it
plausible. In Accord v
Medac [2016] EWHC 24 (Pat), Birss J referred to Carr J’s decision in Actavis v
Lilly [2015] EWHC 3294 (Pat) as authority for the position that a patent
does not need to contain experimental data in order to be plausible. However, Accord was distinguishable from Actavis by virtue of the lack of “information and reasoning” in
the patent which had been enough to render the patent in suit in Actavis plausible.

In Actavis v
Eli Lilly [2016] EWHC 1955 (Pat), Birss J emphasised that the requirement
for experimental data will turn on its facts and also made clear that there
is daylight between the tests for plausibility and for whether something is
obvious to try. Birss J went on to
arguably impart a requirement for plausibility into the law of novelty by
holding that a potentially anticipating disclosure will only be enabling if
it is plausible.

In Warner-Lambert
[2016] EWCA Civ 1006, Floyd LJ upheld Arnold J’s finding that Warner-Lambert’s
claim to pregabalin in neuropathic pain was invalid for lack of
plausibility. The data in the patent
related to inflammatory pain (which has a central sensitisation component). The claim was plausible in relation to
peripheral neuropathic pain (which also has a central sensitisation
component) but not in relation to central neuropathic pain (which
doesn’t). Floyd LJ affirmed that there
is no reason to align the tests for plausibility and obvious to try.

In Idenix
v Gilead [2016] EWCA Civ 1089, plausibility was dealt with under
inventive step. The scope of the
monopoly must be justified by the technical contribution and the claimed
technical effect must be plausible in light of the specification and CGK; it
cannot be established solely by post-published evidence.

Finally, in Merck v
Shionogi [2016] EWHC 2989 (Pat), Arnold J emphasised that the assessment
of plausibility/sufficiency is a two-stage enquiry. It is not permissible for either party to
rely on post-published evidence to determine whether the disclosure renders
the claim plausible across its breadth.
In the event that the disclosure does render the claimed technical effect
plausible, the next stage is to consider whether the evidence establishes
that the claim cannot be performed across its scope without undue
burden. It is permissible to utilise
post-published evidence for the second stage.

A
Few Mince Pies

Submissions post-trial

In Regeneron
v Kymab [2016] EWHC 87 (Pat), Carr J referred to the importance of
drawing material omissions in a Patents Court judgment to the Court’s
attention rather than “attempting to save
up such points for the Court of Appeal”.

Preparation of Expert Reports

Arnold J was critical of both parties’ preparation of their experts
in ASE v
Rapiscan [2016] EWHC 756 (Pat).
The Claimant’s expert had been shown the prior art but not the
Patent. This did not enable the expert
to consider whether the steps between the prior art and the patent would have
been obvious. The fact that the expert
did not reach the invention when equipped with the prior art did not tell you
whether it would have been obvious to the person skilled in the art to reach
it. On the other hand, the Defendant’s
expert was not informed that he was not supposed to use hindsight knowledge
of the invention when considering inventive step.

In Thoratec v
AIS [2016] EWHC 2637 (Pat), the parties were criticised for failing to
appreciate that an order to adduce evidence from two experts was intended to
mean one expert from each of two technical fields (in this case a biomedical
engineer and a clinician). This should
have been clear to the parties in light of it being “well established that the Patents Court does not permit duplicative
expert evidence to be adduced”.

Finally, in Merck v
Shionogi [2016] EWHC 2989 (Pat), Arnold J was critical of the length of
time spent in cross examination attacking the expert’s suitability for the
task at hand. Although it was “both legitimate and helpful to explore
such matters as the witnesses’ qualifications and experience”, too much
time spent on these issues was “unfair
to the witness, unhelpful to the court and waste expensive time”

Use of technical experts

On a more positive note, in Electromagnetic
Geoservices v PGS [2016] EWHC 881 (Pat), Birss J was commendatory of the
technical teach in provided to him by a neutral scientific adviser noting
that in cases of significant technical complexity, such an additional step
will often be useful and proportionate.

Hot tubbing

Finally in the Unwired Planet v Huawei non-technical trial, Andrew
reported that Birss J had asked the parties’ economic experts to consider a list
of points, following which they were sworn into the box together where they
considered the issues with the Judge.
The experts were then cross examined individually and the parties’
advocates were permitted to revisit issues that the experts had previously
discussed with the Judge.

Andrew ended the presentation with a look ahead to
2017. He drew attention to the Unwired Planet v Huawei & Samsung
litigation where judgment following a lengthy non-technical trial is expected
to be handed down by Birss J in January 2017...[We await with bated breath, says Merpel]

Finally, there is the UPC, which was considered to be a
topic for another day. "

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!